Italy’s road towards introducing a trade mark opposition system has been a long one but its implementation could be close.
On March 19 2005, Legislative Decree 30/2005 was enacted, introducing Italy’s Industrial Property Code (IPC) which comprises 246 articles. This contains the fundamental provisions concerning patents, utility models, designs, new vegetal varieties, know-how, semiconductor typographies, the protection of industrial confidential information, trademarks and other distinctive signs, geographical indications and denominations of origin. The trade marks chapter deals with trade mark oppositions in Articles 174 through 184.
Several provisions of the IPC, including those related to trade mark oppositions, were temporarily suspended, pending the issuance of an implementing regulation. Even before the implementing regulation was enacted, it was felt necessary to amend a number of provisions of the IPC to align them with Community and international provisions introduced after 2005 and/or replace certain provisions which were declared unconstitutional by the Italian Constitutional Court.
Legislative Decree 131/2010 of August 13 2010, enacted on September 2 2010 consists of 130 articles; more specifically, Articles 91 through 97 amend a number of provisions concerning trade mark oppositions of the IPC.
Decree 33/2010 of January 13, 2010 of the Ministry of Economic Development, which entered into force on March 10 2010, contains the Implementing Regulation of the IPC. Articles 46 through 63 regulate opposition proceedings and certain preparatory steps which must be taken before the opposition system becomes operative, such as Article 62, which concerns the education, selection and appointment of the examiners, and Article 63, which deals with their liability.
The Italian Patent and Trademark Office (UIBM) still has to issue guidelines for trade mark opposition proceedings. Preparations of these guidelines are well advanced and their publication can be expected soon, through past experience suggests caution. The guidelines will determine the official fees due and provide forms for use in opposition proceedings. The UIBM guidelines could be disclosed either in April or May 2011. The Official Gazette could become available on the UIMB website next May and include applications filed since January 2011.
The deadline for filing
For national applications or registrations the deadline for filing an opposition is three months from the date of publication of the application, or the registration granted on a priority basis, in the Official Gazette of the UIBM. For oppositions against an international registration, for Italian trade mark rights, the three month deadline starts on the first day of the month following the month in which the international registration was published in WIPO’s Gazette of International Trademarks (Articles 176(1) and 175(1) of the IPC as amended by Article 90 of Decree 131/2010).
Parties entitled to file
The owner or exclusive licensee of a prior trade mark application, or registration in Italy, or effective in Italy by means of an international registration designating Italy or a CTM application or registration, is entitled to file an opposition.
An opposition may also be filed by the persons, entities and associations referred to in Article 8 of the IPC which regulates the registration of such persons, entities and associations as trade marks of names and signs corresponding to or including names, portraits and well-known signs.
Enforceable rights
Prior trade mark applications or registrations that are identical or similar to the trade mark that is being opposed, and covering the same or similar goods or services, can be the basis of an opposition.
The lack of consent to register the opposed trade mark by the persons, entities or associations entitled to protection, as provided for by Article 8 of the IPC, is also enforceable.
Consequently, the following prior rights are not enforceable in opposition proceedings and can be claimed only by taking action before the ordinary courts: unregistered trade marks, company names, domain names, and claims to extended protection of well-known or famous trade marks.
Opposition proceedings
The opposition must be filed in the Italian language and fully identify the application or registration being opposed, the prior trade mark application(s) or registration(s) supporting the opposition, the relevant goods and services and the grounds for opposition. Proof of payment of the official opposition fees must also be submitted with the opposition.
The opponent must submit the following documents within a non-extendable two month term of the deadline for reaching a settlement under Article 178(1) of the IPC: a copy of the application(s) or registration(s) on which the opposition is based (together with a translation into the Italian language if drafted in a foreign language) together with any additional documents that can justify the facts being claimed in support of the opposition; documents justifying the entitlement of the opponent to file and pursue the opposition if the application or registration being enforced are made in a name other than the opponent’s; and the relative power of attorney if the opponent is represented by a lawyer.
The grounds of the opposition must be filed together with the notice of opposition within the two month term. However, the UIBM is under pressure to ensure that the opposition grounds are filed within two months from the expiry of the cooling-off period and not immediately together with the notice of opposition within the opposition term. The UIBM, having checked the admissibility of the opposition, will inform the applicant and the opponent that they have two months to reach a settlement. This can be extended upon joint petition of the parties by up to a maximum of one year from the
date of the first UIBM communication (Article 60(2) of the IPC Implementing Regulation).
The UIBM will inform the opponent of any request by the applicant for proof of use of the trade mark(s) upon which the opposition is based and this proof must be submitted within 60 days. A request for proof of use must be submitted (Article 53(1) of the Implementing Regulation) within the deadline set by the UIBM to both parties to submit their respective arguments. The UIBM will submit the arguments to the counterparty and, should the UIBM consider it advisable, grant a deadline to submit counterarguments. If the applicant restricts the statement of goods and/or services, then the UIBM will inform the other party of this and set a term within which the opposition should be maintained or withdrawn with respect to the goods and/or services still present after the restriction.
If proof of use is supplied only with respect to a part of the goods and/or services, a decision will be issued with respect to such residual goods and/or services (Article 53 of the IPC Implementing Regulation).
Decisions and appeals
The decision on the opposition will be made within 24 months of the filing date of the opposition, without taking into account the period of time during which opposition proceedings may have been suspended. This could include the international trade mark registration that the opposition is based upon becoming the subject of an official refusal, being based on a community trade mark application which is the subject of a pending opposition, or being the subject of a revocation application (Article 54 of the IPC Implementing Regulation).
Any decision taken by the UIBM on the opposition and its admissibility can be appealed before the Board of Appeals (Article 182 IPC) within 60 days of the date of receipt of the relative communication (Article 135 IPC).
Decisions made by the Board of Appeals may only be further appealed before the Court of Cassation if points of law are involved. The Court of Cassation is not entitled to reconsider points of fact from the previous proceedings.
Opposition proceedings, once finally complete, are less expensive than the actions necessary before the ordinary courts for the invalidation of recent trade marks. However, actions before the ordinary courts are still necessary when extended protection is claimed for well-known or famous trade marks or for owners of IP rights other than trade marks. In many cases, opposition proceedings will make protection more efficient and less expensive for trade mark owners and consumers.
